US law firm loses fight for 'schiff.biz'

International

In a National Arbitration Forum decision, panellist Tom Arnold dismissed the Start-up Trademark Opposition Policy (STOP) complaint filed by Schiff Hardin & Waite, a Chicago law firm, over the domain name 'schiff.biz'. The panel found that the disputed domain name was not identical to the name and service mark in which the firm holds rights. Under the STOP requirements, a complaint may only succeed if the domain name is identical to such a mark.

The German word 'schiff' means 'ship' in English. The registrant of the domain name, Jens Schnugger, registered the name shortly after the '.biz' domain became available in 2001 to develop a cruise business that he had begun previously under the name BIZCHECK. Schnugger, a German national, planned to use the domain name to market cruises to a German clientele. Arnold determined that the cruise business accounted for 25% of Schnugger's travel business, and that the cruise travel business had "connotative connections" with 'ship'/'schiff' sufficient to support Schnugger's good-faith registration of the domain name.

Arnold concluded that although the domain name matched the first name in the law firm's name, there was no evidence demonstrating that Schiff Hardin & Waite was ever commonly known solely by the first name in its trade name, or had acquired any common law trademark rights in the word 'schiff.' Additionally, the geographical distance and the difference in business interests persuaded Arnold that the German registrant was not aware of the Schiff Hardin & Waite law firm at the time he registered the name, nor anyone using 'Schiff' as a nickname for a US law firm.

The law firm was clearly overreaching in its attempt to stop the use of a partner's name in a three-name law firm. The domain name registrant had a legitimate business prior to the filing of the STOP complaint. Accordingly, the panel concluded that the complainant had not presented credible or admissible evidence demonstrating that the registrant had engaged in the bad-faith registration and use of 'schiff.biz'.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC

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